A patent is an official
document issued ("granted") by the federal government
to the recipient ("patentee"), granting ". . .
the right to EXCLUDE others from making, using, or selling the
invention
throughout the United States" (35 U. S. C. § 154(a) )
and “shall be for a term beginning on the
date on which the patent issues and ending 20 years from the
date on which the application for the patent was filed in the
United States” (35 U.
S. C. § 154(b) ).

A
patent has 3 basic parts:

A
grant(example
to the left) – the same for all
patents, so normally left out of databases and published
copies,

A
description("specification")
telling how to make the invention, and

CLAIMSdefining,
in words, what is protected.

US
Patent Grant

SPECIFICATION
(see below)

A PATENT
SPECIFICATION generallyincludes SIX main components:

TITLE

BACKGROUND(describing the technical
field of the invention and the problems that existed before the
invention,

SUMMARY
OF INVENTION (briefly
summarizing what the invention is about)

DRAWINGS(required if the invention
lends itself to drawings) showing the invention; and

DETAILED
DESCRIPTION(enables
readers to make and use invention - i.e. satisfies statutory
duties under 35 U.S.C.112)

CLAIMS,
which define,
in words, the
limits of coverage
claimed by the inventor.

The
“specification” is the invention disclosure or
“written description” the patentee gives the public
in return for the Government giving the patentee the exclusive
right for a limited time to the invention defined in the
claims. When the Government publishes a patent , a summary or
"front" page (like the "better mousetrap"
patent front page shown to the left) is added to the front of
the patent to show certain useful information concerning the
patent, the patentee and its examination.

1st
page of Patent Specification, called "Cover Page"

SOME
BASICS

An essential feature of a
patent is its limited life. A
patent cannot be renewed.

As
required by the Constitution. Congress only has the right to grant
patents for "limited times" and Congress has set the
maximum life of a patent at 20 years
(subject to payments of large maintenance fees) from the date of
filing of the application for the patent, at the end of
which the patent right expires. Since it takes about 2-3 years to
process a patent application, the patent owner gets about 17 years
during which he/she has a right to prevent others from making,
using or selling the patented invention or require payment of a
reasonable royalty and thereafter the public gets free use of the
invention.

The patent is not
enforceableuntil it is
issued. But, once issued it can be retroactively
enforced (subject to exceptions) from the date the patent
application is officially published by the Government, which is
usually about 18 months after filing, which is normally before the
date the patent is officially “issued.”

The patent is only issued
after an examination by an
“Examiner” at the United States Patent and Trademark
Office in Alexandria, Virginia and other formalities which
generally take about two to four years.
By law, the Government must give the patentee an extension if the
Government spends more than 3 years processing the application,
unless the delay is due to the applicant’.

After
the patent expires (full 20 year period ends) or earlier lapses
(is not maintained by payment of one of the three maintenance
fees), the
patentee no longer has the right to exclude anyone from making,
using or selling the invention of the patent and the public has
the benefit of the disclosure in the patent. It is for the benefit
of (a) having free use of this disclosure after expiration, and
(b) having the benefit of the disclosure as soon as it is
published for purposes of trying to improve on the disclosed
invention that the Government makes the trade of giving the
inventor the period of exclusivity. So, one of the things
the Examiner checks is whether the disclosure “enables”
someone of ordinary skill in the field of the invention to make
and use the invention. The law also requires the inventor to
disclose the “best mode” of the invention, but current
law has gutted this provision by prohibiting a challenge to the
validity of a patent on this ground. Accordingly, this is an
argument that defense attorneys make in many patent infringement
cases. The reason it is so important to have a patent
attorney prepare the patent application is to satisfy all these
requirements and obtain a patent that can be enforced against
infringers. It is pointless to disclose your invention in a
patent publication without getting good protection in return.

As noted, the public benefits
from the grant of a patent because the inventor must make a
description ENABLING the
public to make and use the invention and must describe the BEST
MODE of the invention (known to the inventor at the
time of filing the application) in the patent specification and
drawings and patents are open to all when granted.
Once the patent issues the knowledge set forth in
the patent is available to everyone to see, however the patentee
has the right to exclude others from making, using or selling the
invention defined in the patent claims of the patent during the
term of the patent in the USA. So, the patent claims are
what is covered and that may or may not be identical to what is
described in the other portions of the patent. So, for
analyzing for infringement, we look primarily to the patent claims
alone.

Why
are these documents called "patents?"

The word "patent"
means open, exposed, or evident. Our concepts of patents came from
England and were first enacted by many of the 13 colonies and then
written into our Constitution in much the form that the colony of
New York had previously enacted them. In England, long before the
American revolution, it was an established practice and part of
the law for the King or Queen to grant special exclusive
privileges or monopolies (“mono” meaning one) to
favored people or organizations by means of "Letters Patent,"
which were the documents open to public inspection setting forth
such grants. Such "Letters Patent" were granted, among
other things, for limited times to inventors as a reward and
incentive for new inventions within the realm. With passage of
time, the phrase "Letters Patent" became shortened to
the term patent, but both mean the same thing

OTHER
FEATURES OF PATENTS

A patent is far more than
simply a legal document. It is also a
technical publication and sometimes almost a sales brochure.
It is a technical document that contains a written description
of the patented invention so that everyone interested in the field
to which the patent pertains may learn how to make and use the
invention by reading the patent. Issued patents provide a wealth
of technical information for the public, often unavailable
elsewhere. A patent is analogous to a sales brochure because it
describes what was known before, commonly referred to as the
"prior art," and then sets forth how the present
invention is an improvement over the known state of the art.

The original patent document
(a fancy copy with the gold seal and blue ribbon and the patent
grant on the front) goes to the patent attorney, if any, and the
patent attorney will usually give that document to the patent
owner. Both formal copies (with ribbon and seal and grant page)
and informal printed copies (without ribbon, sea or grant page) of
the patent are available from the U.S. Patent and Trademark
Office, which is a part of the Commerce Department which is part
of the Executive Branch of the US Government. The mailing address
of the office is Commissioner of Patents, Washington, D.C., 20231,
but the current physical location of the office is 2001
Jefferson Davis Highway, Arlington, Virginia, in the Crystal City
office complex just a few minutes from Washington's National
Airport. New patents are issued each Tuesday in a book called
the Official Gazette. Printed copies of the Official Gazette and
copies of all patents are available from the United States Patent
and Trademark Office. Libraries in several major cities throughout
the country have complete collections of U.S. patents.

Internet
access to patents:
The full text of all patents issued since 1976, and images of all
US patents ever issued (since the first patent in 1790) are
available over the Internet at the official United States Patent
and Trademark Office website search pagehttp://www.uspto.gov/patft/index.html, in a massive database of
nearly 4 terabytes, one of the world's largest online databases
and certainly one of the most important, which serves as an
amazing and incredibly useful historical record of the
technological progress of the most technically advanced country in
the world, with an enabling disclosure of each step along the way.
In addition, Google maintains a searchable database of all issued
patents at http://www.google.com/patents

the X-ray machine,
heart pacemaker, aspirin, birth control pill and NMR to
medicine

a host of other
inventions,

all of which
were patented, to realize that an essential cornerstone of the
American success story is the framework for innovation provided by
the patent system. The inventor is rewarded with the grant of the
power to exclude and thus is encouraged to come forth with new
developments while the public benefits because, through patents,
knowledge of inventions is made available to everyone.
Thomas Edison obtained 1093 patents and these patents formed the
exclusive position upon which the General Electric Company was
based. Donald Weder of Highland, Illinois has over 1100
patents related to the floral supply industry, and nearly every
floral product made in the world is made under license from his
foundation. Jerome Lemelson was an independent inventor who
came up with a concept of putting markings on packages and reading
them to control machines in a process he called “machine
vision”, and his foundation has received over a billion
dollars in royalty from this invention that is more commonly known
as “bar coding.”

But
the
patent is only worth what the invention is worth.
It is the invention described and claimed in a patent and the
market for the products or processes based on that invention that
determine the value of the patent and not vice versa. The reward
to the patent owner is usually determined by the commercial
importance of the patented invention. An
inventor gets rich from a patent only if the invention will sell
for a profit.

The benefits to the public
from the patent system can be enormous. Besides stimulating
inventions, patents provide the exclusivity necessary to attract
capital and effort to develop inventions into commercial products
and services. Patents
for pioneer inventions often provide the foundation for entire new
industries, such as the television industry. Even
patents covering minor improvements of a product or process may
have significant value if the improvement results in a product or
process either strongly preferred over competing products or one
that is less expensive to make or use.

How
To Evaluate An Invention

Normally,
evaluation of an invention is rather speculative.
One important start is to try to look at the invention as
unemotionally as possible, keeping in mind other alternatives (and
there are almost always alternatives) that may be available to
solve the same need. A patent search by a professional
searcher and an opinion by a registered patent attorney of the
search results are useful to objectively evaluate the
patentability of the invention and locate alternatives previously
patented. This opinion can often dispel over-enthusiasm of
the inventor who is naturally excited about having coming up with
something the inventor thinks is new and great.

A few tests can be applied to
an invention (patented or not) to determine whether to seriously
pursue it further. Careful study should be given to the

required
investmentfor
supplies for making the product,

necessary
factory changesto
produce the product

advertising
budgetthat
will be required to change public buying habits to accept the
new product,

market
size,
in worst case, in most likely case and in best case and

profit
marginneeded
for the product, considering each step in the distribution
process needs to profit.

So, to
determine the potential value of a patent, it is necessary to make
a comprehensive business evaluation of the resulting product. Both
a thorough Marketing Evaluation of the invention and a Business
Plan for the business to which the invention relates are usually
very important to commercial success, and are almost always
required by investors.There are organizations that
specialize in making objective evaluations of the marketability of
an invention. For example, the World Innovation Network
(also known as the “Innovation Institute”) at
www.innovationinstitute.comprovides a computer-based
marketability analysis (“invention evaluation”) with
personal review by a University of Southwestern Missouri business
professor, for $175 (as of Jan. 2002) using their PIES software
(which has been in use for over a decade). PatentCafe
(www.patentcafe.com) sells a reusable marketability
software program called “Invention Assessment Program”
for $69.95. These are two good ones, but there are many
others.

Although the value of a
patent depends primarily on the commercial importance of the
invention or discovery, there are other important considerations.

The credibility
associated with a discovery is a primary factor in attracting
investors. A successful inventor acquires credibility in the same
fashion as a successful painter or writer. When Thomas
Edison brought an invention to a company for potential licensing,
the company took notice. If John Doe came with the same
invention, he would be treated with lots less respect. Obtaining
a patent gives some credibility. However, in the absence of
prior success, an inventor must still build credibility by proving
the likelihood of commercial success of the product of his
invention or discovery. For example, a certain amount of
credibility may result from the completion
of an operating model, since
that shows the invention at least works. Usually, more
credibility is gained with a production
prototype, since that shows that the product can be
made in production. A manufacturing
plan or production quotes from a reliable manufacturer
give credibility, by showing that the invention can be made
commercially and what commercial production costs might be. A
favorable marketing plan gives
additional credibility by showing that marketing experts consider
the invention should be a market success. A favorable
sales history for patented product is usually the best
indicator of commercial value since it shows the product has
already been selling well. In other words, any step that
concretely bridges the gap between a conceived idea and actual
commercial exploitation tends to build credibility and the closer
the product is to a going commercial success, the more likely a
buyer is to be in the rights to the invention.

Timingis another element that affects
the value of an invention. The public may not be ready for the
invention (bar coding was invented and a patent applied for in the
1950s but was not widely used until nearly 1980, although there
the inventor, Jerome Lemelson, was able to delay issuance of
patents for nearly 23 years and became rich from royalties.) The
law has now changed to prevent that by making the term of a patent
date from its filing rather than when it issues. The life of
utility and plant patents in the United States is 20 years from
filing of the application for the patent, and it is effective
starting with the date of issuance, although once issued it may
(if voluntarily published after Nov. 29, 2000) be enforceable back
to an earlier date of official publication by the Patent Office.
At the end of that 20 year period (or earlier if maintenance fees
are not paid), patent rights in the invention end. Usually, the
invention can thereafter be freely used or worked by anyone,
unless
covered by another patent or other rights.
A variety of economic production, and management factors may come
into play to take the period of patent protection away from the
period when an invention is commercially important. For example,
the marketing period for a faddish toy is often short-lived and
may have passed even before a patent is granted. In those
industries where change is expensive and time consuming, e.g., the
pharmaceutical industry or assembly line productions, actual
approvals for production, development of production lines and
development of a sales network may take a period that is longer
than the life of a patent. Thus, the value of a patent can be
greatly influenced by the patterns for change that exist for
specific products and industries.

Unfortunately,
many
inventors often grossly underestimate the cost and difficulty of
commercializing their inventions and overestimate market size and
the chances of purchaser acceptance.

WHAT
A PATENT IS NOT

NOT
AUTOMATIC (It
must be applied for)

The
Government issues patents. The Government does not know you have
an invention until you tell it. The Government does not know you
want a patent until you file a patent application. The Government
has to protect the public by NOT granting patents to applicants
for inventions that are in the public domain or that someone else
made, and that requires the Government to examine patent
applications thoroughly before issuing patents. So, patents do not
come automatically. The inventor must apply for a patent and the
inventor must prove to the Government that the inventor is
entitled to a patent. And, starting March 16, 2013, the first
inventor to file an application for the invention will be awarded
the patent if the invention meets all other criteria for a patent,
even if someone else invented it earlier. So filing quickly is
important, and may be crucial to protecting the invention.

NOT
A PERMIT OR LICENSE.
(It is a right
to stop others not a permission for you.)

A
patent is like a fence around a lot, the lot being the "patented
invention." Someone else could have a bigger fence
surrounding your fence which prevents you from getting to your
fenced lot or the Government could, under appropriate conditions,
stop you from getting to your fenced lot or could tear your fence
down. That is, someone else could have a broader patent that
blocks a patentee from making, using or selling the patented
invention. Or, there could be a regulation preventing its use.
What is granted is strictly the negative legal right to exclude
others, to keep them out. For example, new drugs are patented all
the time, but FDA approval is required before these patented drugs
can be marketed in the US.

NOT
SELF-ENFORCING.
(There are no
“patent police”. You and your attorneys enforce
it.)

The
government will not take any positive action on behalf of the
patent owner. A
PATENT simply grants the right to exclude and leaves it to the
patent owner to enforce the right- - - if he can.
For this
reason, a patent is sometimes called "a mere license to sue."
The government's role in case of a suit is to allow the patent
owner to use the federal judicial system where suits can be
brought and judgments obtained and orders for enforcement made.
People, including big and small companies, are often deterred by
the existence of a patent and the potential for legal problems if
they infringe a patent, but they may think they can design around
the patent and achieve the same objectives as the patent. If
the patent is written well, it will be a much better deterrent, so
the extra price paid to hire a good patent attorney is generally a
good investment. For more information on patent enforcement, see
http://www.members.tripod.com/burdicklawfirm/websueme.htm.

NOT
NECESSARILY WORTH ANYTHING.
(We discussed
that above.)

Since
a patent simply grants the right to exclude, its value rests
entirely upon the utility of the invention and the desire of
others to use it or to be in possession of the right to exclude.
That is, someone might want to buy the patent from its owner. A
patent is simply a document and not an invention. The invention is
that which is described and claimed in the patent. It is also
important to note that a patent may describe an additional
invention or inventions beyond what is covered by the claims of
the patent. Inventions which are disclosed in a patent but not
claimed are, by law, dedicated by the patent owner to the public,
so the disclosure must be carefully written. For a patent worth
assessment, one can check
http://www.2xfr.com/patentvalue_about.asp.

NOT
A TRADEMARK OR COPYRIGHT.

Patents
relate to inventions,
while
trademarks relate to brand names and copyrights to artistic
creations.
The United
States Patent and Trademark Office handles both patents
applications and trademark applications. The Copyright
Office(http://www.copyright.gov)handles copyright applications
are handled by, which is a division of the Library
of Congress.
States can (and do) grant state trademark registrations, but only
the Federal government can issue patents grants or copyright
registrations.

A
Brief Word About Trademarks

A Brief
Word About Copyrights

A
TRADEMARK
owner
has the right to stop others from using a confusingly similar
trademark (brand name) in commerce in such a manner as to
confuse the public as to the source or origin of goods (or
services) bearing the mark. A patent on a trademarked product
might allow the trademark owner time to better develop the
reputation and goodwill associated with the trademark during
the life of the patent (this is the case with many medical
drugs), but otherwise has little to do with the trademark.
A product shape might be the subject of both a patent and a
trademark, but when the patent expires the invention is public
whether or not trademarked. However, just because a
product may be made after expiration of a product does not
mean someone can sell the product under the former patent
owner’s brand name. If NIKE has a patent on a
sneaker and the patent expires, anyone can make an identical
sneaker, but will not have the right to put the NIKE name or
insignia on that sneaker without Nike’s permission. For
extensive information on Trademarks, see
http://burdicklawfirm.tripod.com/tmark.htm.

A COPYRIGHTpermits the copyright owner
to exclude others from copying the copyrighted material
(books, plays, music, statues, motion pictures, television
programs, etc.) but copyright protection does not extend to an
underlying invention which might be described in the
copyrighted matter. A copyright might stop others from copying
a printed publication about a product, but would not stop use
of the product itself. For example a copyrighted manual
for a cellular phone would not stop someone from building a
cellular phone as described in the manual. However, if
the cellular phone was patented, the patent would give the
patentee the right to stop anyone else from building the
cellular phone. For more extensive information on
Copyrights, see http://burdicklawfirm.tripod.com/webcop.htm.

Automatic
Nature of Trademark Rights & Copyrights Unlike
patents, rights in trademarks and copyrights are partly
automatic in the USA. Trademark rights in the USA are
automatically acquired by using the trademark in commerce and
copyright is automatically acquired by merely creating the
artistic work, in both cases without doing any more or filing
any application. In each case, however, important additional
rights, particularly with respect to enforcement, are obtained
by REGISTRATION of the trademark (through the US Patent and
Trademark Office) or REGISTRATION of the copyright (through
the Copyright Office of the Library of Congress).

Now,
back to Patents....

A
patent cannot be kept secret,
but a
patent application or "patent pending" is kept
confidential by the United States Patent and Trademark Office for
at least 18 months after it is first filed. An essential aspect of
obtaining a patent is that a full and complete "enabling"
disclosure of the "best mode" of the invention is made
so that others may practice the invention when the patent expires
(absent some superior right in others). The only secrecy in the
patent system is that, by law, the application for patent is
maintained in secrecy by the Patent and Trademark Office for 18
months following the date it is first filed as a patent
application. Remember, the word “patent” means open to
public view. The day the patent issues, copies are made available
to anyone who wants them (paper copies for a modest price and
electronic copies for free). So a patented invention cannot be
suppressed or kept secret and any contrary belief is simply a
misconception. There are situations where the Department of
Defense, which has the option of reviewing new patent applications
and placing a “secrecy order” on them preventing
publication of the application or issuance of a patent, but those
are very rare and any inventor receiving a secrecy order should
immediately contact a patent attorney experienced in handling
military classified patent applications, as the inventor is
generally entitled to compensation from the Government. The
most a patent owner can do in keeping the invention off the market
is fail to commercialize the invention himself or refuse to allow
others to do it by refusing to grant licenses and by patent
infringement actions against any infringers. Thus
an inventor comes to a legal fork in the road and must either
choose to keep the invention secret and NOT patent it or to patent
it knowing that it will be publicly disclosed in the patent.
In other words, inventions,
may be suppressed by keeping them out of use and secret, but
patentsare public documents that can
neither be kept secret nor suppressed.

A
patent cannot be enforced outside the country or region that
granted it. A U.S. patent can only be enforced in the US,
including U.S. territories and possessions. A U.S. patent is not a
Canadian patent, a Japanese patent, or a European patent, so it
cannot be enforced in Canada, Japan, Europe or in any other
foreign country. To do that patents must be obtained in those
countries or regions, and this is often done by use of an
“International Patent Application” (under the Patent
Cooperation Treaty, which virtually all countries follow.).
However, the importation of products from abroad which infringe a
U. S. patent may be stopped (the US Customs Service will even
help) and the infringer may be sued here and any US seller may be
sued here. But,
a US patent can be the basis for a foreign patent if timely
foreign application is filed.
The United States has ratified several teaties which provide
significant advantages for those wishing to seek foreign patent
protection, based on a patent application filed in this country.
The details and provisions of such treaties are beyond the scope
of this brochure but can be explained by a registered patent
lawyer. Suffice it to say that securing foreign patent protection
can be very expensive. Even so, foreign patent protection must be
considered early since foreign
patent laws generally place much more emphasis on early filing.
Due to the expense, foreign patent protection may not be
worthwhile unless a market for the patented invention abroad is
important to the patent owner.
Note:There is an "international patent" which can be
obtained through a special application filed at the US Patent
Office and which can be made effective in both the US and nearly
all major countries under the Patent Cooperation Treaty or "PCT."A registered patent attorney
should be consulted before attempting to file a PCT application so
that it is done properly, as otherwise all rights could be lost
world-wide, leaving absolutely no protection anywhere.

The
grant of a patent does not provide any assurance that practice of
the patented invention will not infringe a patent owned by
another.

Example:
Maryinvents
and patents the wheel. John invents and patents a special wheel
for a cart, a cartwheel. Who can make the cartwheel. John can't,
even though he invented the cartwheel, because a cartwheel is a
wheel and Mary has a patent on the wheel. Mary can't because John
has a patent on cartwheels. (The solution is a "patent
license" from one or both to the other or for one to sell a
patent to the other or for them to join forces.) So…if this
is true…why get a patent? Suppose John never patented the
cartwheel. Now he can't do cartwheels because of Mary's wheel
patent. But, Mary can do cartwheels because John did not protect
cartwheels with a patent and thus has no right to stop her. Mary
does cartwheels and John cries because he did not get a patent.

WHAT
IS PATENTABLE?

Not
every invention is patentable in the United States.

First the invention must be
of proper subject matter. Generally “anything under
the sun made by a person” is proper subject for a patent.
More precisely, an invention must fall within one or more of the
following categories. Patents are granted for new, non-obvious,
useful inventions or discoveries of:

I .
Processes,

2.
Machines,

3 .
Manufactures,

4.
Compositions of matter,

S.
New uses of known processes, machines, manufactures or
compositions of matter,

6.
Improvements in any of the above,

7.
Asexually reproduced plants, and

8.
Designs (Design patents last 14 years and are for ornamental
designs for an article of manufacture.)

In general, the Patent and
Trademark Office is liberal in the subject matter of patents and
in claim terminology it will accept, provided the invention is
man-made, is of commercial value and the claims are presented in a
definite fashion so that readers of the patent can tell what
infringes and what does not infringe a given claim. For example,
over the years patents have been granted on: automobile parking
structures, drive-in theaters, slot machines, a host of computer
applications, useful gene fragments, genetically altered organisms
and recently even methods of doing business. The Supreme Court has
even said that "anything under the
sun created by man" is proper subject matter for a
patent.

Perhaps
a better notion is to list the things that are not patentable.
Unpatentable subject matter includes: business forms, perpetual
motion machines, promotional advertising schemes, intended results
or desired goals, functions (without aPUPAratus), nebulous
concepts or ideas, mathematical formulas, and laws of nature (as
distinguished from applications of such laws). Basically, desired
functions or problems are not patentable. It
is the specific thing that solves the problem or the specific
method that performs the function that can be patented, not the
goal or result.

Regardless of the type of
invention for which a patent is sought, there are three general
requirements for patentability which are critically important.
A patentable invention must be
new, useful and UNOBVIOUS.
The new and useful requirements are easily understood and
fairly easily met. An invention does not have to be better to be
useful, it simply needs to have a use. New just means it is not
identical to something done before. However, the non-obviousness
requirement is more difficult. The section of the statute involved
(35 U.S. C. § 103) states it this way:

"A
patent may not be obtained ... if the differences between the
subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains."

To determine the
"obviousness" of a discovery, one must first
identify the prior art. Locating the most pertinent prior
art is not easy in view of widespread technological activity
around the world. The increasing publication of patents on
the internet has made it much easier for the public to access this
information, but as a practical matter, one can still never be
positively certain of having located the most pertinent prior art
in view of the abundance of technical knowledge and publications.
However, any determination of patentability must be based upon
some known prior art garnered from whatever sources the determiner
uses. With the known prior art in mind,
patentability
is determined by asking whether or not the invention would have
been obvious to a person of ordinary skill in the field, who is
aware of that prior art.
To be patentable, an invention must differ from the prior art in a
way that is not just an obvious change or addition. In considering
the question, people may disagree on the abilities expected of the
fictitious "PHOSITRA” (Person Having Ordinary Skill In
The Relevant Art) or on the content of the prior art, or on the
conclusion that the imaginary PHOSITRA would reach. Any such
disagreement is likely to result in a disagreement on the
patentability of the invention in question. It remains an open
question until decided by the court of last resort and, even then,
if new prior art is found to be closer than the previously
considered prior art a settled conclusion of nonbviousness may
become unsettled.

Other general requirements
for patentability are that the invention must not be frivolous or
contrary to public policy or to the public welfare. This is, in
the first case, to deter inventors from filing for patents just to
get a patent certificate on something so silly or petty as to not
be worth the effort the Patent Office must spend to examine and
process it, although every doubt will be resolved in favor of the
inventor as an invention's worth is often so speculative anyway.
In the second case, the Patent Office is a branch of public
Government and thus sometimes will refuse to issue a patent that
is contrary to public policy (for example, an improved aPUPAratus
used only for snorting cocaine or a device useful only to prevent
being caught when committing rape.)

WHO
MAY OBTAIN A PATENT?

Until
March 16, 2013,
only the first and original inventors(or
those asserting such an inventor's rights) can properly obtain a
U.S. patent. A person who merely recognizes the commercial merits
of an existing product, or who discovers it in an ancient document
or in a foreign country may not properly receive a patent; he must
have invented it himself.
Until March 16, 2013, a
corporation or business organization may not pursue patent
protection on a developmentindependently
of the inventor.However, it is common
practice for employed inventors to assign patent rights to their
employers. Many employers make assignment a condition of
employment. After March 16, 2013, a company having such an
assignment can file an application on the invention even if the
inventor refuses to sign or participate in the patent application.

The
law provides for joint inventorsif
two or more inventors together made the invention. Problems may
arise in this situation but the problems can usually be solved.
Specifically, unless there is an agreement or assignment of the
patent to one of the inventors or to a third party, in the US,
each
inventor has the right to exploit the invention with no duty to
account to the other inventoror
inventors for his actions. (Note: This is not true in many foreign
countries.) In the US this is true regardless of the percentage of
the patent any one joint inventor may own. Moreover, none of the
joint inventors has the right to exclude the others from
practicing the patented invention due to the power of the other
joint inventor or inventors to use the invention and grant
licenses to others. Clearly then,
the rights and obligations of joint inventors should be defined by
an agreement or the patent should be assigned to a single entity.

Who's on first, What's on
second? Occasionally, it happens that two or more independent
inventors come up with the same invention at about the same time.
So, who gets the patent? In foreign countries the first one to
apply for the patent gets the patent. Starting
March 16, 2012, the US will adopt that approach. Until
then, however, in the US, it is more complex. The Patent and
Trademark Office has two mechanisms to resolve the issue, one of
which is a very expensive and complex administrative proceeding at
the US Patent and Trademark Office called an "interference"
proceeding. These proceedings are best handled by patent attorneys
experienced in such proceedings. In such a proceeding the question
of who is the first, true and original inventor is determined, for
only that inventor (or group of inventors) may obtain the patent.
In the US, only
until March 16, 2013,
it is not necessarily the inventor who first filed a patent
application who obtains the patent.
(It should be noted here that in all foreign countries, the first
inventor(s) to file DO get the patent. The USA was the last
country to allow later filers to prove they are the first
inventor, and will no longer do so after March 16, 2013.)
While the first applicant has a distinct advantage in these
complex interference proceedings, he may lose out to another
inventor who has records that prove him to be the earlier
inventor, diligent in his development effort. Determining the
winner of an interference involves resolution of complex factual
and legal issues. For present purposes, suffice it to say that
witnessed records covering the development of an invention are
important, as is diligent activity and an early filing date for
the patent application. After March 16, 2013, it will still be
possible to show that an earlier filer derived the invention from
a later filer and get the patent removed from the earlier filer
and awarded to the actual inventor instead. This will be an
equally complex and expensive proceeding and will require thorough
records showing the derivation, which may not usually be
available. This brings up the importance of timing in obtaining a
patent, particularly if foreign coverage will be desired.

WHEN
MAY ONE APPLY FOR A PATENT?

Time is important both as it
relates to the activities of the inventor and the discoveries of
others. Considering the possible history in the discovery of the
wheel and cart may help explain some of the time limits for
patentability.

Initially, the first inventor
of the wheel may have merely recognized the problems associated
with moving large loads on rolling logs (the prior art). With only
the recognition of the need for a better structure, a patent
application would not yet be timely; a patentable invention had
not yet been made.

A
patent application is not proper until a working form of an
invention has been fully conceived.

At a time when the complete
invention is mentally pictured, that is, fully thought of in an
operative form, the inventor may properly pursue patent
protection. It is only then that a patent application can be filed
with an enabling disclosure as required by law.

Until
March 16, 2013,
a US patent application must be filed within one year after the
invention first is described in any publication, placed on sale,
sold, or used publicly.
Starting March 16, 2013 tha application must be filed before any
third party disclosure of the invention and within one year of any
disclosure by the applicant herself.

Continuing with the wheel and
cart example, quite independently of any effort to obtain patent
protection on the wheel, the inventor Mary might have published a
description of her invention or she may have built a wheeled wagon
and gone into the moving business. Such activities would raise
another question of timing. The US rule is based on the philosophy
that the inventor abandons his patent rights if he does not file a
proper patent application within one year from (or, starting
March 16, 2013, before) disclosure or commercial activity
with respect to the invention or discovery. Typical of most areas
of law, there are exceptions to the rule,
as in the case of legitimate experimental use to perfect or
develop the invention.

Any
publication or public use of an invention that takes place before
the filing of an application in the United States may block the
inventor from obtaining a valid patent in foreign countries (and
starting 3/16/2013 in the US).

Most foreign countries do not
provide the one-year period of grace we have in the United States.
Starting 3/16/2013 that grace
period in the US will only apply to disclosures by the applicant
(or someone who derived the invention from the applicant) and NOT
to disclosures by anyone else independent of the applicant.

An
inventor may keep his invention secret for a long time and still
obtain a patent. However, a long delay in applying for a patent
may result in the loss of all patent rights, which may go to a
second independent inventor who acts more promptly, and
this will be even more true after 3/16/2003 when the US switches
to the “first to file” system.

An invention that is
suppressed or concealed will not be prior art against a later
applicant, unless that invention
is used commercially. The system is designed to encourage
use and disclosure and
thus punishes a non-using
concealer as against a later discloser. A careful record of use
of an undisclosed invention and an inventor's efforts to
prepare an invention for disclosure will certainly help avoid a
finding that the inventor abandoned, suppressed or concealed the
invention.

So,
it generally is wise to keep careful records of the invention and
its development and use,
and efforts to prepare it for public disclosure which should be
signed by a witness, and to file an application for a patent at
the earliest practical time, preferably before any public
description, or commercial development or public use of the
invention. The relatively new "provisional patent
application" makes it easier to complete a prompt filing.

HOW
TO OBTAIN A PATENT

The steps involved in
obtaining a patent normally include:

prepare
a disclosure of the invention;

conduct
a patentability search on the invention;

prepare
and file a provisional patent patent application in the U.S.
Patent and Trademark Office;

prepare
and file a non-provisional (“regular”) patent patent
application in the U.S. Patent and Trademark Office based on the
provisional;

prosecute
the application in the office to convince the “patent
examiner” to “allow” claims to the invention;
and, finally,

pay
the issue fee for the patent and see that it is granted.
(note that this is not the end of the process as maintenance
fees are required.)

The inventor may, if very
lucky, obtain a "patent" without the assistance of a
patent lawyer or agent if she wishes. However, this is almost
invariably an unwise course of action. Patent law and procedure
are complex and valuable legal rights can easily be lost if the
patent application and prosecution of that application are not
handled carefully and precisely by one skilled in such matters.
The law does not prevent an inventor from being foolish and trying
to cut corners and patent it yourself. There is even a book out by
the name “Patent-It-Yourself”, although that book
strongly recommends you use a patent attorney. Companies that file
lots of patent applications use patent attorneys for a reason. The
reason is similar to the reason you go to a specialized surgeon if
you need specialized surgery. You almost certainly will get a
better patent if it is done by a patent attorney experienced in
the preparation of good patent applications. It is also helpful if
the patent attorney has experience in litigating patents to know
what things Courts and juries like to see in a patent application
when considering whether to enforce it or not.

The
inventor should be very, very leery of invention
promotion companieswho
are not patent attorneys, as these are quite often scam artists
who prey on under informed inventors.There are lists available of
those companies that have been indicted, forced into settlements,
barred from doing business, or otherwise been found by inventor
protection groups to be of questionable integrity. One such list
is available over the internet at the InventorEd.org site.
Inventors want to hear how great their invention is, when often
what they most need to hear is a voice of reason calmly relaying
the sobering truth about the invention's shortcomings. Also, most
large companies know of the scam invention promoters and think
much less of an inventor and an invention that is associated with
a scam invention promoter. If the invention promoter cannot be
honest with the inventor, there is generally no logical reason for
a company official to trust the promoter to be honest with the
company, so the company will usually just ignore any invention
presented to it by a known or suspected scam promoter..

If
an invention is worth protecting, it is normally worth protecting
right,
and that is best done by a registered
patent attorney or patent agent,
since they are required to pass an examination given by the United
States Patent and Trademark Office demonstrating their knowledge
of patent law and procedures. The United States Patent and
Trademark Office exams patent agents and patent attorneys due to
the high importance the Government places on new ideas and on the
need to try to assure that inventors have competent help available
to try to secure the best protection for inventions. Patent
lawyers and patent agents who are registered to practice before
the U.S. Patent and Trademark Office may prepare, file and
prosecute patent applications. Patent agents are not lawyers and
cannot provide legal advice and assistance beyond preparing and
prosecuting patent applications. In order to be registered, patent
lawyers and agents must take and pass a special separate "Patent
Bar Examination" given by the United States Patent and
Trademark Office. Patent attorneys have the extra capability of
negotiating for license, of litigating infringement claims, of
preparing and advising on contracts and of preparing trademark
applications related to the brand names used in association with
any patented invention, and thus often can give more complete
advice and representation. It is generally better to go to a
patent attorney to prepare your patent application, because you
then have someone available who is familiar with your invention
and thus in a better position to help you enforce the claims of
the patent against infringement.

Ordinarily attorney fees will
be based upon the amount of lawyer time involved in preparing and
in prosecuting the application. Different patent lawyers charge
different fees. Some lawyers may consent to preparing a
patent application for a flat fee after they sufficiently
understand what the invention is and basically how much time and
effort and expertise the preparation of the application will
entail. In any case, an inventor should not be hesitant about
asking the lawyer what the total fees in obtaining the patent are
likely to be if the patent is prosecuted through the Patent and
Trademark Office in a fairly routine way. The patent
attorney will also advise the inventor of problems that could
arise in the Patent and Trademark Office prosecution which could
necessitate significantly greater costs, such as an responses to
rejection, appeal or an interference. The inventor should
keep in mind that there is a significant issue fee (about $700)
payable once the application is allowed and before it will be
granted, that fee basically covering the Government’s cost
in printing hundreds of copies of the patent, posting it on the
internet, and entering it in all the various official lists of
patents. Also, once the patent issues, there are three
increasingly large “maintenance fees” to pay 3.5
years(about $500), 7.5 years(about $1000) and 11.5 years (about
$1500), respectively after the patent issues. The patent
attorney will charge a modest amount to process the payment of
those fees.

SUGGESTED
STEPS FOR INVENTORS TO TAKE IN PROTECTING THEIR INVENTION

STEP
1: PREPARE A DISCLOSUREOF
THE INVENTION

Lawyers charge for
their time, except sometimes for initial consultations when the
lawyers are determining whether to take your case, and patent
lawyers are no exception. Therefore, an
inventor can save a great deal of time and money by making the
lawyer's job easier. A few hours spent by the inventor at the
start may result in hundreds of dollars of savings and a better
application in the end.

It is relatively easy for the
typical inventor to organize the inventor's materials, and the
inventor can help the patent lawyer by preparing a written
description, drawings, and perhaps a model, if practical. At a
minimum, the disclosure should include a description of the
problem that the invention solves, previous ways of solving the
same problem (if any), all known relevant prior art inventions, a
description of how the invention solves the problem and a detailed
description of the best mode of practicing the invention. If there
are some likely alternative embodiments of the invention, those
should be described also. The inventor does not have to detail
each and every remotely possible embodiment, but describing
alternatives or modifications helps the lawyer to draft claims
more broadly to provide better protection for the invention.

The
disclosure should be clear.

It
is not necessary that it be typewritten or that there be drawings,
but both certainly help. A legible, carefully handwritten
disclosure is adequate. Sketches or drawings are quite useful and
can reduce the amount of description needed.

A
good disclosure is not necessarily long.

If
the inventor isn't sure whether something should be included in
the disclosure, the inventor should put it in and let the patent
lawyer decide whether or not to make it part of the patent
application. If the inventor has relevant prior art documents,
copies of these should be provided to the patent lawyer along with
a description of their possible relevance to the new invention.
Drawings prepared by the inventor should be clear and sufficiently
detailed.

It
is good practice for the inventor to number the various parts of
the invention in the drawings and to refer to those numbers in the
written disclosure.

This
is what will be ultimately required in the patent application, so
by doing this the inventor may reduce the time the attorney needs
to do the reference numbers in the application. It will also
minimize the time the attorney needs to figure out what parts are
what. If alternative embodiments of the invention are described in
the disclosure, then drawings should be submitted illustrating
them. One good clear method of numbering is to start with
100-199 as the items in Fig.1, 200-299 as the number of any new
items in Fig.2, 300-399 for any new items in Fig. 3, etc. so that
by looking at any reference number the reader can determine which
Figure to check to see where that item was first shown. The
same part should keep the same number throughout the drawings
Another method in common use is to use even numbers starting with
a number higher than the number of Figures (to avoid confusion
with Figure numbers) and to allow room to add odd numbers if
additional numbers are needed later.

Above
all, conceal nothing from your lawyer.

You
can only lose by keeping secrets from your patent attorney, who is
required by law to keep everything you tell him secret. Your
lawyer is very, very unlikely to even consider stealing your
invention. That would likely end the lawyer's lucrative career and
chance getting the lawyer disbarred. Attorneys are not going to
risk their career to steal your invention, even in the unlikely
event they think it is the greatest thing they have ever seen.
Concealing facts from your lawyer may get you both in trouble and
may result in your patent attorney unknowingly getting you an
invalid or unenforceable patent at your expense. How can the
patent attorney disclose the “best mode” if you hide
it from him or her? If a model of the invention exists, it
should be shown to the patent lawyer. If prior art is known, you
MUST tell your lawyer about it and your lawyer MUST tell the
United States Patent and Trademark Office. Anything less is a
fraud that, if serious enough, could invalidate your entire
patent. If you did not invent the invention yourself, tell your
patent lawyer so he can determine what, if anything, you did
invent and whether negotiations are needed with a co-inventor. If
no drawings exist, photographs may sometimes be used, and your
patent lawyer will normally have a patent draftsman available to
make drawings according to the special standards required by the
United States Patent and Trademark Office.

A
professional patent search will almost always save the inventor
more money than it costs. What
does a patentability search cost?A
cost of $600-$1,500is typical for a professional
patentability search and opinion. For most individual inventors
with fairly simple inventions, the cost of a professional search
with opinion is around $600.00, of which about half is for the
search and half for legal work associated with reviewing the
invention and advising on the likely scope of coverage. If
a formal opinion is not required, the cost can sometimes be
lowered by about 1/3 to $400-1000. For more details, see
my article on Patent Searching at http://burdlaw.com/patsrch.htm.

If
a search reveals that the invention is not patentable, then the
cost of filing an application will be saved. If the search reveals
that the invention may be patentable, the search results allow the
patent attorney to prepare a more effective application and that
will usually save money during the examination process at the
patent office. Finally, the search will usually tell how other
inventors have attempted to solve the same problem and may give
ideas for making a more competitive product.

For
many years, the most accessible and complete library of prior art
has been housed in the U.S. Patent and Trademark Office. The
public is admitted to this library or "search room";
however, it is used primarily by professionals such as
professional searcher. Patent lawyers not in the Washington, D.C.
area invariably have Washington, D.C. associates who make various
types of patent searches and who obtain other types of information
from the Patent and Trademark Office.Increasingly, databases
are becoming available by computer that are becoming better and
better at locating prior art. The Patent Examiners who will
examine your patent application will use computer searching using
very sophisticated databases and software and computers with dual
monitors and other special features rather than hard copy
searching. Increasingly, computerized searching is improving
and is now to the point that in the hands of a skilled patent
searcher, it is nearly as good as hard copy searching.

The
full images of all pages of all patents ever issued by the United
States of America since the first one in 1790 are now available
on-line atwww.google.com/patents.
The inventor can and should do a quick search using the Google
patent search tool as a preliminary screening step. If the
inventor locates the invention or a commercially equivalent
invention patented by someone else it may be a waste of time to
pursue the invention further, and doing so may result in
infringement. A patent attorney can advise on these matters.

NOTE:
Before proceeding to step 3, the inventor should discuss the
search results with a patent attorney to determine if there is
sufficient patentability to proceed to step 3.The inventor should prepare a
business plan to see if the sale of this item is really feasible
before committing to a major expense like the preparation of a
good patent application. The Small Business Administration has
materials that are very useful to inventors in helping prepare
such a business plan. See the information at
http://www.sba.gov/starting/indexbusplans.html. A
Provisional Patent Application
may decrease up-front costs, and should
be considered.
See the discussion below in this article. The services of a
patent attorney are usually critical to success.

STEP
3. - DRAFT AND FILE THE PATENT APPLICATION

USE
A PATENT
ATTORNEY,
as this
is the critical step
in your process and is not
the place to cut corners.

A patent application is the
document filed in the Patent and Trademark Office for the purpose
of obtaining a patent. It is sometimes
said to be the single most difficult legal instrument to write,
since it requires both technical expertise and extremely
specialized legal knowledge to write a top-notch patent
application, and often a single word in the application can be the
difference between a valid and invalid patent and between broad
coverage and narrow coverage.
Just as one telling example, if a do-it-yourself applicant uses
the word “consisting” instead of the word “comprising”
the scope of the patent coverage will be much less, but the
difference in those two words is one that even a newly registered
patent attorney will understand. Likewise, knowing the difference
between the use of “in the invention” and “in an
exemplary embodiment” in the description and the
significance of the terms and when to use them is extremely
important to obtaining broad scope. Knowing the legal significance
of the words “means for”, which have been heavily
litigated is often critical to obtaining the broadest protection.
Knowing the holdings of recent Federal Circuit and Supreme Courts
on claim terminology and claim interpretations is very important.
Knowing how patent drawings need to appear and what needs to be in
them and what should not be in them is very important and making
sure they do not conflict with anything in the written description
and have consistent and proper numbering of parts and terminology
can be crucial. Knowing the significance of the “written
description” requirements, the difference between “elements”
and “limitations”, the difference between “abstract”
and “summary”, and many similar nuances that are
critical to success is something few inventors know. Since there
are significant limitations on making changes in the application
after it is filed in the Patent and Trademark Office (for example,
there is a strict rule against "new matter") it should
be prepared with utmost care. Both the inventor and attorney have
legal obligations to insure that the various parts of the
application are correct and, to the best of their knowledge, are
not misleading. This is like brain surgery where you would not
think of doing it yourself but would look to a brain surgeon, and
here to a patent attorney to protect the product of your brain.

It
is not necessary to construct a working model.

Since the application must
describe the invention in such a complete way that one of ordinary
skill in the relevant technical field would be able to make and
use the invention, models are no longer required or even desired
by the United States Patent and Trademark Office. There are nearly
400,000 patent applications filed each year and there is simply no
way that so many patent models could be stored.

The
description must be "enabling."

Because of this, effective
preparation of that document is a demanding project requiring full
knowledge of a completely conceived invention. It is not enough to
describe a problem, since that does not describe the solution. The
solution must be described and will be what the patent, if
properly written, seeks to broadly cover. The description must be
at the same time both very detailed and yet not limiting. Doing
that takes experience.

The
patent application must disclose the best mode contemplated by the
inventor for practicing the invention.

Concealing the best mode may
invalidate the claims of the patent, and yet is something
inventors sometimes foolishly attempt to do. Although the use of a
failure to disclose the “best mode” as grounds to
invalidate a patent has been prohibited by the current patent law,
this provision of the new law has not been tested in the Courts
and there are many, including the author of this article, that
think such a provision may be held unconstitutional and be
repealed.

There
is a duty to disclose all knowledge of pertinent prior art.

Concealing known prior art
relevant to the claimed invention may be considered fraud on the
United States Patent and Trademark Office if disclosure would have
invalidated the affected patent claims. That is because, as part
of the application, the inventor must sign an oath or declaration
stating he has revealed all known pertinent information as
required by Rule 56 of the Patent Office Rules of Procedure.

NOTE:
The patent application provides the foundation for defining the
proper scope of patent protection that is to be granted. If it is
not written well, the patent coverage may be of narrow scope and
little value.

The
main parts of an application are:

a
background and prior art discussion,

In the background and
prior art discussion, problems or shortcomings that have
been experienced in practices or products known in the prior
art are described. This section seeks to convince the
Patent Examiner (and later any Judge called upon to uphold
the patent) that the invention is an important one and
advances the progress of the useful arts and sciences.

drawings

If an invention is
susceptible of being drawn, the patent application normally
must include a drawing as part of the invention description.
The drawing should illustrate the best embodiment of the
invention in order to meet the best mode and enablement
requirements noted above. Patent applications on chemical
compositions are a common exception to that practice.
Instead of a drawing, chemical patent applications give
"examples", which are actual or hypothetical tests
and results showing the chemical reactions occur as
described and claimed. The drawings of a patent application
must conform to established standards and are usually made
by professional draftsmen. Modern patent drawings are
now done primarily with CAD software and an experienced
patent draftsman can be extremely helpful in preparing
drawings that best show the unique aspects of the invention.
The style and technique for patent drawings are quite
different from the formats used in industry. Sloppy
drawings make extra work for the Patent Examiner and
irritate the Patent Examiner. The patent drawings
need to be clear and neat because they will be printed for
all to see as the most visible and prominent part of the
patent application. As a consequence, patent
drawings should generally be made by specialists who work
under the direction of the lawyer and are familiar with the
requirements of the Office. It is possible to file informal
drawings, if properly done, and then "formalize"
them (without adding anything new) after the prior art
examination is complete and the claims allowed.
However, sloppy incomplete work on the drawings risks
failure to disclose some key aspect with resultant damage to
the coverage of the patent that issues and with increased
probability that a Judge will hold the patent invalid.

a
detailed description of the invention,

The detailed written
description of the invention, also called the
"specification", must by law include adequate
technical information, taken with the drawings, to enable
one having ordinary skill in the art to carry out the
invention. The specification must also include a written
description of the best mode of practicing the invention
known to the inventor at the time the application is filed.
These two requirements, “enablement” and
“best mode” are common avenues of attack in
patent infringement defenses, so the patent needs to be
written with a view toward the likely day when the
description will be attacked in Court by a defendant
claiming there was a failure to make an enabling disclosure
or a failure to disclose the best mode. Details about
every part of the invention may not be required as long as
any undisclosed details are well known or consist of
standard, commercially available parts. The written
description should disclose any alternatives and equivalent
structures known by the inventor that would also work in the
invention.

the
claims.

While
claims are placed last in the printed patent application,
they appear first in the on-line version of the patent and
their importance is first, since perfection in the rest of
the application is of little value if the claims do
not properly cover the invention.
This is
not to say that there may not be remedies for imperfect
claims under the right circumstances, but it is important
that properly written claims of appropriate scope be present
in the application. Most of the prosecution is devoted to
having the claims written in acceptable form, since the
claims are required to be specific enough to tell others
what they will be excluded from doing.

Usually,
the most effective patent application results from a joint effort
between an inventor and his patent lawyer.

It is possible for a person
to prepare and file a patent application on his own without a
lawyer, just as it is possible for an accused murderer to try to
defend himself in a capital murder case. Both are extremely
foolish to do. When a lawyer working with the inventor prepares an
application, there should be total communication. Specifically, it
is important that the inventor give the lawyer all the relevant
information for the job. The preparation of a patent application
compares to making a cake. Considerable assistance can be given to
a cook by premeasuring the ingredients, laying out the tools, and
preparing the oven; but usually it is best for the cook to mix the
ingredients, check the oven and place the proper decorations.
Somewhat similarly, in the preparation of a patent application,
the inventor should provide the information but allow the lawyer
to compose and draft the complex document. Drawings, photographs,
written material, and oral discussions all may be helpful to
educate the lawyer, depending on individual circumstances. Patent
applications on complex subject matter normally should include at
least one meeting between inventor and lawyer. After a draft of
the application is prepared, the lawyer requests the inventor to
review it carefully to determine if there are corrections or
changes to be made before it is placed in its final form for
execution and filing in the Patent and Trademark Office.

The
formal papers (petition, oath or declaration, power of attorney)
are prepared for the inventor's signature, or execution.

The complete application
signed by the inventor is then sent or delivered to the Patent and
Trademark Office along with the appropriate filing fee. Once the
application is on file, the invention, if marketed, may be marked
with the notice "patent pending, " although the right to
prohibit use of the invention by others does not mature until the
patent is granted. Use of that notice before filing is illegal.

PROVISIONAL
UTILITY PATENT APPLICATIONS

In 1995, the patent laws
were changed to provide for the filing of a special simpler, lower
cost, TEMPORARY
form of patent application called a "provisional patent
application." Provisional patent applications must have a
specification but do not have to have claims , are not published,
and are not examined for obviousness over the prior art.

A
provisional utility patent application (PUPA) lasts only one year,
is
not published, is not examined, does not count as part of the 20
year term of a patent and cannot be infringed. A PUPA allows use
of the designation “patent pending” in association
with the invention disclosed in the PUPA. A
PUPA can be, but never is, converted into a regular patent
application.Instead,
a PUPA provides a patent disclosure having a filing date upon
which a formal patent application (a “regular” or
“utility” patent application) can be based.The
PUPA preserves an applicant’s filing date for purposes of
priority but do not begin the 20 year term of life..This form of patent application
was intended to offset an advantage foreign inventors previously
enjoyed due to the simpler forms of patent application required in
foreign countries, the absolute novelty requirements in most
foreign countries and the rule in most foreign countries that the
first inventor to file a patent application is, as a matter of
law, the “first” inventor. In view of the high level
of the written description required in US patent applications,
foreign applicants had what was perceived to be an unfair
advantage, and the PUPA was enacted to give a shorter, easier,
quicker way to file a patent application and obtain a filing date.
There are advantages and risks in using provisional patent
applications, particularly in regard to foreign rights and
adequacy of disclosure. If one does not fully understand both
provisional patent applications and utility patent applications
(since the PUPA will be the basis for a UPA), it is best to
consult a patent attorney before filing a PUPA.

STEP
4. - PROSECUTION OF THE PATENT APPLICATION

Receipt
by the United States Patent and Trademark Office.

Patent applications filed in
the Patent and Trademark Office are given serial numbers in
chronological sequence. The filing date is also part of the
identification for an application. That date is very important,
since the filing date of a Provisional or
Utility Patent Application determines priority of invention as
against prior art and as against other applicants. The filing date
of a Utility Patent Application determines the start 20 year life
of the patent and will be considered the date of invention unless
otherwise proven..

Assigned
to a Patent Examiner.

Within the United States
Patent and Trademark Office , patent applications are assigned to
examiners with specialized technical
expertise. The examination of
applications normally occurs in the order in which they are
receivedby the examiner,
although specialized processing may be obtained under special
circumstances, such as an inventor that is over a certain age or
where there is active infringement occuring. Every effort
is made by the Office to attain a uniform and fair treatment of
patent applications; however, communications with the Office must
meet certain standards and formalities. Since November 2000,
the United States Patent and Trademark Office has time deadlines
under which it must act and the patent term is adjusted to reflect
any failure of the United States Patent and Trademark Office to
meet such deadlines.

US Patent Examiners follow a
MANUAL
OF PATENT EXAMINING PROCEDURE.In a typical case, the patent
examiner first reviews the patent application for compliance with
formal requirements. Then he considers the invention as claimed.
With an understanding of the claimed invention, the
Patent Examiner researches earlier patents and publications (the
prior art) to determine whether the claims of the patent
application define subject matter that is patentable over the
prior art.Traditionally,
examiners are conservative, if not skeptical, in recognizing
patentable subject matter. After determining his position, the
examiner prepares a report or Examiner's Action, stating his
position for communication to the patent applicant. The law
specifies that this action is to be provided within 14 months of
the filing date of the Utility Patent Application. Usually,
few if any claims are allowed in the first Office Action.

If
the applicant has a patent lawyer, the Office Action is mailed
directly, and only, to the lawyer. The
patent attorney will then have 3 months to respond to the
examiner's position and will invariably contact the inventor to
discuss whether a response is to be made and arrange for payment
of any fees for such preparation. For example, the inventor may be
asked to review the prior art cited by the examiner and express
his resulting opinions. The applicant is given a time period for
responding to the Office Action. The
response might take the form of an argument seeking to change the
examiner's position, with or with out an amendment modifying the
claims of the patent application. Recent
Court cases make any “narrowing” of the claims very
dangerous to future enforceability of the patent. If the inventor
did not use a patent attorney, this will usually be the point
where the foolishness of that decision will become all too real
and apparent to the inventor. Unless the inventor has a great deal
of experience with patents, there is just no way the inventor can
adequately prepare a response to an Official rejection from the
United States Patent and Trademark Office, and any inventor who
represents himself at this stage normally has a fool for a client.

After receiving the
applicant’s response to her Office Action, the examiner
again considers the case and reviews her position. Although the
matter may not be concluded at that stage, there are usually no
more than two or three actions and responses before the question
of patentability of the claims is resolved. The second Office
Action is usually made “final”, which means the
applicant must either comply with any requirements made by the
Examiner or in the next response convince the Examiner she is
wrong. The examiner may determine that the application simply is
not directed to a patentable invention. Alternatively, she may
recognize the existence of a patentable invention and agree with
the form and scope of the claims. A greater possibility is that
the examiner concedes the invention to be patentable but disagrees
with the lawyer on the scope of the claims that should be granted.
Failing an agreement, an administrative appeal can be pursued
before a Board of Patent Appeals and Interferences comprised of 3
experienced patent examiners called Administrative Judges.
However, frequently agreement is reached between the examiner and
the attorney, whereupon the patent application is ready to mature
into, or "issue," as a patent. A "notice of
allowance" results setting a deadline for paying an “issue
fee” and putting the application, particularly drawings, in
final form for publication.

STEP
5. – PRE-GRANT PUBLICATION OF THE PATENT APPLICATION

Patent applications filed
after November 19, 2000 are published 18 months after their filing
date unless a request for non-publication stating the application
has not been and will not be filed outside the USA is submitted in
a timely manner. This pre-grant publication (“PGPUB”)
is important notice to the public of the existence of the claim of
the inventor for protection under the patent laws and the
potential for liability for any infringement after that time. The
PGPUB allows the patentee, upon the issuance of the patent, the
retroactive right to collect a reasonable royalty from an
infringer as of the date of the PGPUB of any claim of the patent
that would also infringe a claim of the published patent
application. This minimizes surprise to the public from delayed
issuance of a patent application (so-called “submarine
patents”) and helps protect the inventor against use of the
invention between the date of publication and issuance. The
publication is of the application as filed unless certain unusual
steps are taken. For more detailed information on PGPUB see
http://www.uspto.gov/web/offices/pac/pgpub.htm.

STEP
6. - ISSUANCE OF THE PATENT

After
the "notice of allowance" is issued, an "issue fee"
must be paid. About three or four months after payment of the
final fee, the patent issues. From
filing to issue, the average time a patent application is pending
is about 2-3 years.

By long tradition, patents
are always issued on a Tuesday.
Also on Tuesday of each week, the Office publishes the 0fficial
Gazette abstracting all of the patents issued on that day, and on
the following Thursday the patents are posted on the United States
Patent and Trademark Office website
http://www.uspto.gov/patft/index.htmlalong with the other 6,300,000
plus patents already issued since 1790. Patents are issued in
numerical order, currently at the rate of about 2200 utility
patents per week.

The
original of the patent will be sent to the lawyer who then either
forwards it to the inventor or his assignee or who keeps it in
safe storage for the inventor. Additional
copies of the patent may be obtained from the Office for a fee,
but the original patent is an important document that should be
kept with other valuable papers.

The issuance of a U.S. patent
puts the inventor in the company of Edison, Ford, and the Wright
brothers, and other inventors who have held U.S. patents for their
inventions and is an occasion that rightfully brings respect and
admiration to the inventor. At the same time, the public benefits
by having the inventor's disclosure of his new and useful
discovery.

Most importantly, however,
the issuance of the patent makes the claims immediately effective
in the USA. Patent applications filed after November 19,2000
are published 18 months after their filing date unless a request
for non-publication stating the application has not been and will
not be filed outside the USA is submitted in a timely manner.
If publication has occurred prior to issuance, the issuance allows
the patentee the right to collect a reasonable royalty from an
infringer of any claim of the patent which would also infringe a
claim of the published patent application.

EXPLOITATION
OF PATENTS

"The
need for creativity does not end with the issuance of a patent".

Whether the inventor seeks
to license his development or directly market the resulting
product, success usually requires an innovative and intense
effort. The process is likely to be difficult and chances for
success are statistically poor.

This is true for the
established businessman as well as the unknown independent
inventor. The mere availability of the basis for a new product,
even an exciting one, may not stimulate much interest from serious
investors or purchasers. Develop credibility, use imagination, and
make the effort. Thousands have been successful, but rarely
without initial setbacks and disappointments.

INVENTION
PROMOTERS AND BROKERS – WATCH OUT!

Because of the difficulties
and expense in marketing new inventions, independent inventors
have sometimes turned to promoters for help. These promoters have
variously identified themselves, for example, as invention
submitters, invention developers, idea brokers, inventor
assistance companies, invention technology companies, global
development companies, and technology or marketing consultants.
Unfortunately,
many invention promoters offering services to independent
inventors have preyed on the unwary, making promises that they are
incapable of keeping, then charging exorbitant fees.
Financial loss
and heartbreak have taught many inventors, dealing with
unscrupulous promoters, the lesson of caution. Useful information
on how to avoid being scammed can be obtained at
http://burdlaw.com/inventor.htm. A valuable Cautionary
List is available at http://www.inventored.org/caution/list/The United Inventors Association
provides a list of warning signs at
http://www.uiausa.com/Redflag.htm.
Check with the closest Patent Depository Library (listed at
http://www.uspto.gov/go/ptdl/) for more guidance on avoiding
scams or locate a local inventors' club.

PATENT
LICENSING

Patent licensing offers a
variety of possibilities. A license can be limited to a single
company (exclusive) or nonexclusive licenses can be granted to
several companies. Other aspects of licensing include the
responsibility for enforcement, conditions of termination, foreign
rights, related trade secrets, know-how, and the very important
royalty payment. Licenses are common which provide for either:

1. a single lump-sum
royalty payment;

2. a royalty of a specified
amount for each product produced under the license; or

3. a royalty in the form of
a percentage of the receipts from the sale of the licensed subject
matter.

Although royalty percentage
rates are the most common form of license payments, the rates vary
widely from fractional percentages to double-digit percent
figures, depending on the nature of the industry, production
costs, the significance of the invention, and so on.

There
are prohibitions on licensing,
violation of which can amount to patent misuse or antitrust
violations. For example, a licensor should not fix prices, require
the purchase of unpatented products, regulate the use of the
patented product, or require royalty payments beyond the life of
the patent. Again, the law in this area is complex sothe
objective here is merely to indicate the possibility of danger.Similarly, a patent holder
should be aware thatthe
details of a license can have profound consequences on the tax
aspects of royalty payments.

For
further information on patent licensing, we suggest you view our
licensing page at http://www.burdlaw.com/Linkpages/weblicns.htm.
There is an outstanding trade association for licensing
executives, the Licensing Executive Society
(http://www.usa-canada.les.org/)
that can provide all the information you might desire and contacts
with many reputable licensing companies, and membership is about
$160 per year,.

Patents
may also be sold outright.

ENFORCEMENT
OF PATENTS

Many
conflicts involving patents are settled by negotiation.

The patent owner will often
take the initial steps at negotiation when a possible infringement
is found. However, it is normally best to consult with a patent
lawyer who has experience in patent litigation, so that the
infringer knows the patent owner means business. Not doing so
risks the infringer ignoring demands as not really being serious.

Failing
the settlement of a conflict, suit may be brought

GET
A GOOD LAWYER.
Since patents are issued by the Federal Government under Federal
law, suit for patent infringement is a federal right and must
begin in a federal district court located where the infringer
resides or where infringement occurs and the infringer is subject
to personal jurisdiction. The objectives are (a) an injunction
against further infringement and (b) damages (as from loss of
sales or royalties). A litigation attorney, preferably experienced
in patents and in the technology involved, will be needed to have
reasonable prospects of success. This is VERY expensive and a good
solid patent, well drafted is crucial for the patentee. On the
defensive side, this is where a wrongly accused infringer can be
legally declared not to infringe a patent, and a good patent
litigator is important to obtain that finding of non-infringement.

It
is also possible for an alleged infringer to initiate legal action
to attack a patent without waiting to be sued by the patentee.

After the patent owner has
charged someone with infringement, the accused infringer may file
what is called a Declaratory Judgment ("DJ") action
seeking to have a court say the accused infringer does not
infringer. The claims of the patent in dispute are reviewed for
possible invalidity and, if not found invalid, a determination is
made whether or not the accused infringer is proven not to
infringe.

A
major infringement or DJ suit is a very involved and expensive
proceeding that may take several years.

Pretrial procedures are
liberal in allowing the parties to obtain very detailed
information from each other. A very high percentage of patent
infringement cases are settled. Alternate
Dispute Resolutionprocedures are sometimes useful
for patent disputes, as the disputants often want to keep a
relationship while settling the patent dispute.

ALTERNATIVES
TO PATENT PROTECTION

Some
inventions can be commercially exploited while being kept secret.

For example, a product may
not reveal a chemical process that is used to make the product.
Also, in some instances, agreements for secrecy have been used
successfully, as in the protection of computer software. However,
outside these possibilities, trade secrets (like all secrets) are
difficult to keep. In general, one who
learns a trade secret without wrongdoing (as by his own discovery
or analysis) is legally free to use the knowledge.

"Disclosure
Document,"

The Patent and Trademark
Office will accept and preserve for a limited time an informal
description of an invention known as a "Disclosure Document,"
which was referred to previously. Such a document can be prepared
and filed by an inventor, butit
does not provide any significant form of legal protection.
It simply provides evidence of the date of conception of the
invention disclosed, which can be done as simply in many other
ways. The Disclosure Document will be destroyed after two years
unless it is referred to in a separate letter in a related patent
application within the two years. I
strongly advise against use of this program and
encourage use instead of provisional patent applications as
discussed above.

Trademark
and copyright protection

Trademarks and copyrights
simply do not cover inventions, as was explained earlier.
Ultimately, a trademark (such as KODAK or COCA-COLA) may have
immense value that far exceeds any value of any patent, but at the
initial stages, when the trademark does not yet have great
reputation, a patent provides its owner with a unique package of
rights that cannot be duplicated by any other means. Only
a utility patent can stop others who have copied the utilitarian
(functional) aspects of an invention or have done their work
independently of those making, using, or selling the patented
invention.

PATENTS DO NOT
GUARANTEE SUCCESS, BUT MOST SUCCESSFUL BUSINESSES ARE BASED IN
PART ON PATENTS.